57 F. 637 -

57 F1d 637

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Case Text

HARMON V·. S'J:'RUTIlERS.

687

in the wording of the original claim; and that the reissue was obtained because, upon further consultation and advice, it was concluded that he had erred in judgment in not attempting to make a different and broader claim than the one he conceived to be expedient. He patented what he intended to, and by the reissue sought to patent a broader invention. Applying the settled doctrine of the adjudications of the court of last resort, we must adjudge the claim of the reissue to be void. The decree of the circuit court is reversed, with costs, and the cause remanded to the circuit court, with instructions to dismiss the bilL·
HARMON et al. v. STRUTHERS et al. (Circuit Court, W. D. Pennsylvania. September 4, 1893.) No.2.

Letters patent No. 248,277, granted to Frank L. Bliss, October 18, 1881, for an improvement in reversing gear for steam engines, by which the vibration produced by the movement of the reversing link is prevented from. being transmitted to the elbow lever by means of a slot formed in the upper end of the lifting bar at its connection with the link, are for an Invention of a primary character; and a device whIch accomplishes the same result by elongating the ordinary slot of the reversing link, so that when the elbow lever is at rest on its stop there Is a slot in the reversing link itself above the valve-stem pin, infringes the Bliss patent by the sub· stitution of mechanical equivalents.

So

SAME-PUBLIC USE.

More than two years before his application for a patent, an inventor, , WIthout profit to himself, and for the sole purpose of testing the efficiency of his invention by practical use, placed his device on engines manufactured by his employers, who sold them with a view to experimental use. .HelrJ, that there was no pUblic use or sale, within the meaning ot the patent law.

In Bill to·restrain infringement of patent. Decree for cOOllplainants. For prior report, see 48 Fed. Rep. 260. W. Bakewell & Sons and A. Wentworth, for complainants. D. F. Patterson and James C. Boyce, for defendants. Before ACHESON, Circuit Judge, and BUFFINGTON, District Judge. ACHESON, Circuit Judge. '!'his suit is upon letters patent No. 248,277, gTanted October 18, 1881, to Frank L. Bliss, for an improvement in reversing gear for steam engines, in which the claim is:
"The elbow lever and link having a slotted connection, as described, for adjusting the link, D, in combination with the stop or set screw for relieVing the lever from the vibratiOD due to the movement of l!ll1id link, D, substantially as described."
I

688
": to 1» apretious, between the,s'efia.me parties:' Harmon v; Struthers, 43 Fed. Rep. 43,'f.. : 'We there Mld';that Bliss was the "riginal arid first inventor of :the device destlri,bed,in his that the irivention was,highly meritorious, and 01 a primary and that' the reversing gear which the defettdants were, then manufacturing was substantially the device,-tlie apparentdi1ference being structuI'a:l, and involving the mere substii:tition"by the defendants of equivalent our views upon these points, together with Rn:explanation' 'Of the nature of the invention and a statement of the prior state of the art, we refer to the opinion in that case. To those views we adhere, notwithstanding the additional proofs in the present re((9rd. After the decision in the former suit the defendants abandoned the use Qf:tliespecifiodevice,which the court had there enjoined, and made a change in the method of accomplishing the desired result, which they insist has freed them from the imputation of infringement.' But thatAjhange is simply this: In Bliss' device the ,.. producedJ>y the movement of the reversing link is prevented from being'transmitted to the elbow lever by means of a slot, which, as illustrated by his patent drawing, is formed in the of the bar. at its connection .with the link, whereas' .111. the' present device the slot t() effect that purpqseis, formed by elongating the ordinary slot of the reversing link, 80., 'that when the elbow lever is at rest upon its stop there is a slot in the reversing link itself above the valve-stem pin. The defendants' apparatus, then, has a slotted connection formed by tljle eloJ;lgated",link slot and the pin on the valve stem' which fits therein, in comqination with the stop for relieving the elbow lever from vibration. Mr. Heisler, the phiintiffs' expert, upon this sl1bject, testift'e,s. thus: '. .'
"I find in the defendants' device all the elements of the Bliss claim, that Is, the elbow lever, slotted connection, and stop, performing the same work in substantiapy way, lioing a special and.peculiar work, (reversing an oll engine quickly and positively from a distant point, remote and indl)'pendent of the engine and its foundation,) which could not have been done successfully by any device known before BlisS' inventIon. The only change the defendants, have made is a mere· change in location 'of the slot, but this is It' Change merely in position. It, does not change the result, or the principle of the operation, for in both the defendants' arid Bliss' device tl?-e principlj;l"Is t:f.at of a ,slidingly pivoted on a suitable pm tor the'purpose of preventing the,vlbration of an elbow lever."

These views, we think, are correct, and it seems to us that the Blis.s and the defendants' apparatul!! accomplish the , same identj,palresult in substantially the same way; that they both alike in the::same respects, from the.,prior state of the art; and that, in so far as there is any variance between the two devices, it is in ,the ,employment by the defendants of known mechanical equivalents. Now, where the invention, as' here, is one or'·a primary charac· ter, and the mechanical functions performed by the device are,

HARMON V. B1:RUTHERS.

639

quent machines which employ substantially the same means to accomplish the· same result are infringements. Consolidated Safety-Valve Co. v. Crosby Steam Gauge & Valve 00., 113 U. S. 157, 5 Sup. Ct. Rep. 513; Morley Sewing-Mach. Co. v. Lancaster, 129 U.. S. 263, 9 Sup. Ct. Rep. 299. Hence, in Royer v. Belting Co., 135 U.S. 319, 324, 10 Sup. Ct. Rep. 833, where the specification of a patent for a mac'hine for converting raw hides into leather described an upright slotted shaft and. compressing weights, and the claim was: "The vertical shaft, B, with a slot, Bt, and set screws,b, b,b, said shaft having a forward and back motion, sUbstantially as and for the pm'pose described,"-and in the defendants' apparatJUs there was a horizontal cylinder, in which. was a horizontal revolving shaft, without weights, cQmpression being accomplished by screw mechanism, it was held that, if the patented invention was in fact "one of a primary character," (within the ruling.in Morley SeWingMach. Co. v. Lancaster, supra,) these differences in construction were not conclusive upon the question of infringement. In Winans v. Denmead, 15 How. 330, 342, the rule is thus laid down:
"It is generally true, when a patentee describes a machine, and then claims it as deScribed, he is understood to intend to claim, and does by law actually cover, not only the precise forms he has prescribed, but all other forms which embody his invention, it beiI!g a familiar rule that to copy the principle or mode of operatiGn described is an infringement, though such copy should· be totally unlike the original in form or proportions."

as a whole, entirely new, the established rule is that all subse-

This rule was enforced in the recent case of Hoyt v. Horne, 145 .U. S. 302, 308, 12 Sup. Ct. Rep. 922, where the court said: .
"It is insisted by the defendant in this connection that there is no infringement of the first claim of the Hoyt patent, since the pulp is not circulated in vertical planes, nor is it delivered by the beater roll into the upper section of the vat, as specIfied in that claim. Literally it is not. A technical reading of the specification undoubtedly required that the mid-feather should run horizontally instead of vertically; but the object of this was that the pulp should be received and delivered by the beater roll along its entire length, viz. across the entire width of the tub, and this is accomplished in the same way in both devices. · · · The substitution of a vertical for a horizontal mid-feather at the inoperative end of the tub is merely the use of an old and well-known mechanical equivalent, and obviously intended to evade the wording of the claims of the Hoyt patent."

We hold, then, and are well warranted by the cited authorities in so doing, that the reversing gear which the defendants are now manufacturing comes within the claim of the patent in suit. The defendants, however, allege, and earnestly press as a defense, that Bliss' patented device was in public use and on sale more than two yerurs before his application for a patent, which was filed March 8, 1881. This defense was set up in the other suit, and was overruled. In· so far as the present defense rests upon the "push reverse," the tMllsactions with respect to "'-hich we found to have been wholly of an experimental nature, and the device itself a failure when subjected to practical test, we here reassert our former conclusion, referring to the opinion of the court in the prior case (43 Fed. Rep. 437) for our reasons for such determination.

640

FEDERAL REPORTER,

vol. 57.

. B,!t. the ltdditionatand, fuller proofs now before ·us sho,,/ tlu\,t. the

when in the" first suit, fell into. some· miE1takes as to dates" amd otherwise, and it now appears. that· ,same with Bliss' pull e. his device in the form in which, 'it eventually. patented-went out from the shop of Harmon,. Gibbs & Co. into the oil field more than two years before the applioo.tilJll fora M,tent; that is, before MaTch 8, 1879. The earliest instance of this is an engine, No. 14, w}:lich was sold an,d delivered to E. A. Oulver on May, 20, 1878. Mr., OUlver states that he bought this engine from George H. Gibbs, through George Sheffteld,and that it was "a straight purchase, without any condition Gibbs having died a few months afterwards, we are without his testimony. Sheffield ca:nnot remember what occurred between, himself and Culver, but says, "I was a:nxiO'Us to sell the engine, and get it out on trial." James W. Ford, who had charge of the Oulver wells, states:

"After the engine came upon the lease, and before it was set up, Mr. Oul· vel' came up there, and we looked the engine over, and talked about it. . It had a pull ,reverse attached to it. This was something new in oil-well engines. I waS, afraid of it. ,1 told him I did not like the looks of it, and was afraid it would not do the Work. Mr.. Culver told me he saw Mr. Gibbs on the train ashe was going home a few days before to get a new engine. He said he had taken the engiqe of Mr. Gibbs, subject to approval. He told me to set it up and give it a good trial. I did set it up at this No.1 well, and we used it a couple of dayll in pulling the weIl. 'fhe link broke while we were, pulling it, and I took the link to a machine shop at Summit city, and had it fixed. We drilled upon that lease three other wells, but this engine remained at No. 1 until some time in April, 1879, when we moved it, and commenced drilling No.3 with it. We finished No.3 May 25, 1879. No.1 flowed, anll this engine did l,ll> work from the time it pulled the well,as I have mentioned, until we commenced drilling this No.3. While drilling this No.3 the link broke severlil times, and I finally went to Harmon, (}ibbs & 00.'9 shop, and got a new link. ,The elbow lever on this engine also broke near the knuckle. or place wheri=litw'as attached to the lug while drilling this well. I repaired it by putting a brace across from the long to the short arm of the lever. * * · But we had difficulty. Before breaking, the lever would spring, and, after the' brace was put across, the lever would still spring when the link started b,lll'Ii. I think the spring of the lever i$ what caused the linli to break. When the link did start, it went quick, and struck bard on the roller or block, as it came up. There was so much delay and trouble with this re,verse gear that I had difficulty with the men drilling the well. They kept kicking about it. As the well was being drilled by contract, they complained at the delay they were put to. The engine worked well. The difficulty was Wl.ththis reverse gear. * * * When this first engine came upon the lease, it attracted considerable attention with this new reverse. Quite & numMr of people engaged in the oil business, and putting down and operat. ing oil wells, came to see it. There was a general expreSsion of doubt about its working successfu!lY,-the reverse gear,-and considerable fun was made of it.. We were the first ones in our locality that had. the sand to try it I understood Mr. J. J. Oarter was going to give it a test, or was then testing it, and with that exception I knew of none that were in the field,"

The direct teatimony,as a whole, taken in connection with all the surrounding circumstances, would quite justify the conclusion that, as between the inunediate parties to the transaction, the sale to Culver was for the purpose lYf test. .

· HARMON 'Ii. STRUTHERS.

641

Between the date of Geo['ge H. Gibbs' death, in September, 1878, and !tfarch 8, 1879, 10 other engines equipped with Bliss' pull reverse went out from the shop of Harmon, Gibbs & Co. into the oil field, but the evidence, we think, shows that they were all sold to J. J. Carter, the brother of George H. Gibbs' widow, or through him to friends, out of the ordinary course of trade, upon special terms, and with a view to experimental use. But, at any rate, so far as Frank .L. Bliss himself was concerned, all these transactions were purely eXPerimental. He was not a vendor of these engines or of the reversing gear. He merely allowed his device to be put on the engines for the sole purpose of testing it. Of this the proof is positive and convincing. He was not a member of the firm of H3J1'mon, Gibbs & Co., nor was he pecuniarily interested in the sales or business of that firm. He was simply an employe in their shop; nor had the firm any right to, or pecuniary interest in, the invention at that time. The situation was as thus stated by Bliss:
"1 had no means except my day wages in the shop, and 1 had a family to support 1 could not have tested it or patented it myself. Harmon, Gibbs & Co. furnished the money to procure the patent for me. 1 had no shop. 1 had no engines upon which 1 could put them for trial or experiment.. 1 had no oil well at which 1. could give them a trial. 1 had no means of testing the reverse gear, except as they were put upon the complainants' engines and those of George H. Gibbs."

It clearly appears that Bliss' device could only be tested by practical work in the oil field. Then, again, the device was a mere appendage to the engine, which was complete without it. It was not the principal subject-matter of sale, but a mere incident. Fur· thennore, it 'is shown that Bliss derived no profit whatever from the use of his device, or from any sales of engines made prior to the grant of his patent. 1.'his, then, is the case: Bliss' device could only be tested by putting it on his employers' engines, and sending 'it out into the oil field fOT practical use, and this his employers permitted him to do, without profit to him. Did he thereby forfeit his invention? It would be a hard thing so to hold. We do not think the law demands such a c()nclusion. The experimental use of an invention by the inventor or by per· sons under his direction, if made in good faith, solely in order to test its qualities, has never been regarded as a public use. Elizabeth v. Pavement Co., 97 U. S. 126, 135. In Winans v. Railroad Co., 4 Fish. Pat. Cas. 1, 10, Mr. Justice Nelson charged the jury thus:
"If the use be experimental, to ascertain the value, or the utility or the success of the thing invented, by putting it into practice by trial, such use will not deprive the patentee of his right to the product of his genius. The plaintiff, therefore, in this case, had a right to use his cars on the Baltimore and Ohio Railroad by way of trial and experiment, and to enter into stipUlations with the directors of the road for this purpose, without any forfeiture of his rights." .

It has been held that, if necessary in making tests, an inventor may sell a machine on trial so as to get it fully and fairly tested by practical use by the class of persons for whose use it is intended, and such sale .:Y1' use, eyen for more than two years, if made for the v.57F.no.5-41

642

FEDERAL REl'ORTER,vol.

57.

of practical test,;wUl not invalidate the patent. Graham v. McOo:rmick, (per Drummond, G. J.,) 10 Bisl!!. 39, 43, 11 Fed. Rep. Grahl3m v.Geneva, Manuf'gQo." (per Dyer,:J.,) 11 Fed. Rep. 138. In Smith & M;anuf'g 00. v. Sprague, 123 U. S. 249, 256, 8Sup.Ot.Rep. 122, it
by the fOl! the purpose ofteeting the machine, in order by to devise additiQlJ!8.1 means forperfectJing the success of its operation,is admissible; and where, as incidellt to such use" the product of its operation is disposed of by saIe, such profi:l:. from its use does' not change its chaxacter, but where the use is mainly for thepurpO$eS of trade and profit, and 'the' experiment is merely ,futhat, the principal, and not the must give character to the use., 'T.hE!. thing Implied as excepted out of the Pl'9hibltion of the ,Is a use which may be properly characterized as sq-bstantially for the purpose of experiment,"

principleot ,these decisions, :we think, is justlyapto the case in' b.a;nd, where the acts of the inventor were without any profit to him, and for the single purpose of testing the praptica.bility of, h'is inven,tion by needed trial and experiment. It is veryceqotain that, if BliSs, could not safely make the test in the manner in which he did, he could not have made it at all. The 'evidence clearly satisfies ·us:.that the test,' both as respects then1Jmber of engines emp19yed arid the duratiOJ;l, of the use, was altogether reasonable. During the years 1878 and 1879 numerous complaints of the reversin,g gear were made attil..e,shop of Harmon, Gibbs & Co., ap(i Mr. Shave, a machinist that "Mr. BUllS ;kept changing it to overcome these alleged defects." Mr. BaglJy, then an,employeat the shop, states: '
continued durtnli, 1878 and 1879. In and making challgesto overcome the as they known, and to make the reo verse gear He was diligent in his efforts to accomplish that result,"

It WItS not before late.in the faIl of 1879 tJhatthe practically opera.tive succesS' of the device was demonstrated. Upon the wMle, we are of opinion that the plai:ntiffs are entitled to a decree.

PATENTs FOR The test case involving the validity of the Edison patent for incandescent .electrlC,.. la,mps .(No..223,898) wliS brought May. 1885, and prosecuted' with all' due .After Its. determlnatlon the present suit Wail beguh defendant' corporations which were not organized until . & year or two after the commencement or the test suit, and did not begin active operations In ,incandescent lighting untUthree years after